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					        Case 6:10-cv-00133-TLM-PJH Document 1                    Filed 01/29/10 Page 1 of 11



                               UNITED STATES DISTRICT COURT
                               WESTERN DISTRICT OF LOUISIANA
                                    LAFAYETTE DIVISION

FIREFLY DIGITAL, INC.,                               )           CIVIL ACTION NO.
                                                     )
                 Plaintiff,                          )           JUDGE
                                                     )
VERSUS                                               )           MAG. JUDGE
                                                     )
GOOGLE, INC.,                                        )           JURY TRIAL DEMANDED
                                                     )
                 Defendant.                          )

                                             COMPLAINT

         Plaintiff, Firefly Digital, Inc., alleges as follows:

                                      NATURE OF THE CASE

         1.      Plaintiff seeks recovery of monetary damages, penalties and injunctive relief

arising from certain acts of Defendant, including infringement of Plaintiff’s trademarks and

service marks, unfair competition, dilution, injury to business reputation, and unfair trade

practices.

                                            THE PARTIES

         2.      Plaintiff, Firefly Digital, Inc. (“Firefly”), is a Louisiana corporation having its

principal place of business in the Parish of Lafayette, State of Louisiana.

         3.      Upon information and belief, defendant, Google, Inc. (“Google”), is a Delaware

corporation having its principal place of business at 1600 Amphitheatre Parkway, Mountain

View, California 94043. Google is transacting and doing business in this judicial district.

Google may be served through its registered agent for service of process, The Corporation Trust

Company, Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware 19801.




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                                JURISDICTION AND VENUE

         4.    This Court has jurisdiction of this matter upon the following grounds: (a) 28

U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. § 1121, as this matter arises, in part, under the

Trademark Act of 1946, as amended, 15 U.S.C. § 1051 et seq.; (b) 28 U.S.C. § 1338(b), as the

claims of unfair competition are joined with substantial and related claims under the Trademark

Act of 1946, as amended, 15 U.S.C. § 1051 et seq.; (c) 28 U.S.C. § 1367 for the state law claims,

as those claims are so related to the federal claims that they form part of the same case or

controversy; and (d) 28 U.S.C. § 1332 as this action is between citizens of different states and the

amount in controversy exceeds the sum of $75,000 exclusive of interest and costs.

         5.    Venue is proper in this judicial district under 28 U.S.C. § 1391(b) and (c).

               FACTUAL BACKGROUND AND GENERAL ALLEGATIONS

         6.    A website is a collection of web pages that may contain text, images, videos or

other digital media. The website is addressed with a common domain name or IP address in an

Internet-Protocol-based network.     A website is hosted on at least one web server that is

accessible via a network such as the Internet or a private local area network.

         7.    A web page is typically a document written in plain text interspersed with

formatting instructions of Hypertext Markup Language (HTML, XHTML). Web pages are

accessed and transported with the Hypertext Transfer Protocol (HTTP). The user’s application,

such as a web browser, displays the page content according to its HTML markup instructions.

All publicly accessible websites collectively constitute the World Wide Web.

         8.    A widget is a mini-application that is implemented using web-based technologies

such as HTML. Widgets typically contain dynamic content and may take the form of on-screen

tools such as clocks, daily weather information, calendars, flight information, and the like. A


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widget can be embedded into third party websites by either the website administrator or by any

user on a web page having rights of authorship (e.g., a user’s profile on a social media website).

         9.    Headquartered in Lafayette, Louisiana, Firefly has for eleven years engaged in the

business of website design, development, and hosting.

         10.   Unique to its business and services, Firefly created a proprietary website content

management system that enables the company’s clients to modify the content of their websites.

Firefly has also created proprietary add-on applications for its content management system.

Firefly uses the content management system and add-on applications to differentiate itself from

other website developers and to promote its business opportunities.

         11.   Since at least as early as January 7, 2002, Firefly has continuously used the mark

WEBSITE GADGET in connection with the advertising, marketing and sale of its content

management system as well as the services of installing and configuring the content management

system on websites.

         12.   Firefly has also since at least as early as January 7, 2002, continuously used the

mark GADGET in connection with the advertising, marketing and sale of its add-on applications

as well as the services of implementing and configuring the add-on applications for the content

management system on websites.

         13.   Firefly obtained and owns U.S. Trademark and Service Mark Registration No.

3,730,874, issued December 29, 2009, for the mark WEBSITE GADGET, a true copy of which

is attached as Exhibit “A.”

         14.   Firefly also obtained and owns U.S. Trademark and Service Mark Registration

No. 3,711,998, issued November 17, 2009, for the mark GADGET, a true copy of which is

attached as Exhibit “B.”


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         15.   Firefly also obtained and owns Louisiana trademark registrations for the marks

WEBSITE GADGET and GADGET.

         16.   Firefly’s federal registrations are entitled to the statutory benefits conferred by

Sections 7(b) and 22 of the Trademark Act of 1946, as amended, 15 U.S.C. §§ 1057(b) and 1022,

and thus are prima facie evidence of the validity of the registered marks and of Firefly’s

exclusive right to use them in commerce.

         17.   As a result of Firefly’s continuous and extensive use, advertising, and promotion

of its WEBSITE GADGET and GADGET, the marks have each become well and favorably

known to the consuming public and the trade as identifying and distinguishing Firefly’s goods

and services from others.

         18.   Through the marketing, promotion and sale of its goods and services under the

marks WEBSITE GADGET and GADGET for over seven years, Firefly has earned and

established an outstanding reputation in the industry and among consumers.

         19.   Firefly’s marks WEBSITE GADGET and GADGET have become a valuable

company asset.

                                   ACTS OF DEFENDANT

         20.   Google’s primary business is the operation of an Internet search engine located at

www.google.com through which Internet users can obtain information and shop for goods and

services on the World Wide Web.

         21.   Through “Google Apps”, Google markets and licenses on-line applications,

including its “Google Sites” website design and development applications also commonly known

as Google’s content management system.




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         22.   Through “iGoogle,” Google permits users to create a personalized Google home

page or web portal.

         23.   Google also makes available “Google Desktop,” which is a desktop search

software. The program allows text searches of a user’s e-mails, computer files, music, photos,

chats, Web pages viewed, and the like.

         24.   Google also operates a program called “Google Gadgets.” Through “Google

Gadgets,” Google provides a directory of widgets that users can add to a web page or to

Google’s properties such as iGoogle, Google Desktop, or Google Sites, a content management

system. Rather than refer to widgets by their common descriptive name, Google calls its widgets

“Gadgets.”

         25.   Google created some of the “Gadgets” that populate its “Google Gadgets”

directory, but many are created and uploaded by third-parties at the direction and encouragement

of Google using “Google Gadgets Editor” and “Gadgets API.”

         26.   Google operates two programs, known as Google Adwords and Google Adsense.

These programs work together to form an online advertising platform that effectively matches

advertisers (Adwords customers) and publishers selling ad space (Adsense customers).

Advertisers create ads, select associated keywords and then publish their ads in Google’s

advertising platform. Google’s platform then generates the ad placements within its search

engine, its other properties and throughout its network of participating publishers. Google's

Adsense program also encourages and promotes persons (“Publishers”) to use Google Gadget

Editor and Google API to create widgets and embed Google Adsense ads into such widgets.

Google pays Publishers a sum of money based on the number of “clicks” an ad receives. Google

receives significant revenue from these programs.


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         27.   Google also directs “Google Gadget Ventures,” a program in which Google

awards $5,000 grants to users who have built “Gadgets” that Google would like to see further

developed. Under the “Google Gadget Ventures” program, Google also awards $100,000 seed

investments to developers desiring to build a business around the “Gadgets” platform.

         28.   Google’s use of “Gadgets” is an integral part of Google’s product strategy

particularly in Google Sites where Google provides a product that competes directly with

Firefly’s website builder and content management system products. In Google Sites, users are

able to embed portable content, e.g., widgets stored on Google Gadgets, into their websites.

Similarly, Firefly, under its WEBSITE GADGET, mark provides a website building and content

management system, and under its GADGET mark, provides for content portability such as

widgets.

         29.   Google’s first use of “Google Gadgets,” “Google Gadgets Editor,” “Google

Gadget Ventures,” “Gadgets API” and “Gadget” occurred after Firefly’s first use of its

GADGET and WEBSTE GADGET marks.

         30.   Google’s use of “Google Gadgets,” “Google Gadgets Editor,” “Google Gadget

Ventures,” “Gadgets API” and “Gadget” is without Firefly’s permission.

         31.   Google uses “Google Gadgets,” “Google Gadgets Editor,” “Google Gadget

Ventures,” “Gadgets API,” and “Gadget” in interstate commerce in such a manner as to imitate

Firefly’s registered marks WEBSITE GADGET and GADGET.

         32.   Google’s use of “Google Gadgets,” “Google Gadgets Editor,” “Google Gadget

Ventures,” “Gadgets API” and “Gadget,” which terms are confusingly similar to Firefly’s

registered marks, is likely to cause confusion, mistake, or deception among the trade and the

purchasing public as to the source, origin, and sponsorship of Google’s business, goods, and


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services. Google has thereby induced purchasers and others to believe—contrary to fact—that

Firefly has provided, sponsored, authorized, licensed or approved Google’s business, goods, and

services, or that such business, goods and services are in some way connected with Firefly.

         33.   Google’s use of “Google Gadgets,” “Google Gadgets Editor,” “Google Gadget

Ventures,” “Gadgets API” and “Gadget” in connection with Google’s business, goods and

services falsely designates the origin of Google’s business, goods and services as Firefly’s, and

suggests that Google’s business, goods and services are in some way connected with, licensed

by, authorized by, or approved by Firefly.

         34.   Google continues to use “Google Gadgets,” “Google Gadgets Editor,” “Google

Gadget Ventures,” “Gadgets API” and “Gadget” to confuse and deceive purchasers and to obtain

the acceptance of Google’s business, goods and services based on the merit, reputation, and

goodwill of Firefly and its high quality goods and services identified by its registered marks.

         35.   Google’s use of “Google Gadgets,” “Google Gadgets Editor,” “Google Gadget

Ventures,” “Gadgets API” and “Gadget” has created a likelihood of injury to Firefly’s business

reputation, and the dilution of the distinctive quality of Firefly’s famous marks.

         36.   Upon information and belief, Google’s use of “Google Gadgets,” “Google Gadget

Editor,” “Google Gadget Ventures,” and “Gadget” is intentional, knowing, and willful and for

the purpose of misappropriating Firefly’s business and goodwill.

         37.   Google’s acts have caused and are continuing to cause irreparable injury to

Firefly, for which Firefly has no adequate remedy at law, and Google will continue to do so

unless enjoined by this Court.




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                                           COUNT I

                      FEDERAL SERVICE MARK INFRINGEMENT

         38.   Firefly adopts, realleges, and incorporates by reference all of the allegations

contained in all of the preceding paragraphs of this Complaint.

         39.   Google’s acts as described above constitute intentional infringement of Firefly’s

federally registered marks in violation of 15 U.S.C. § 1114.

                                           COUNT II

                            FEDERAL UNFAIR COMPETITION

         40.   Firefly adopts, realleges, and incorporates by reference all of the allegations

contained in all of the preceding paragraphs of this Complaint.

         41.   Google’s acts as described above constitute the intentional use of a false

designation of origin, false description, and/or false representation in violation of 15 U.S.C. §

1125(a).

                                          COUNT III

                             FEDERAL DILUTION OF MARKS.

         42.   Firefly adopts, realleges, and incorporates by reference all of the allegations

contained in all of the preceding paragraphs of this Complaint.

         43.   Google’s acts as described above constitute intentional dilution of the distinctive

quality of Firefly’s famous registered marks in violation of 15 U.S.C. § 1125(c).

                                          COUNT IV

                        STATE SERVICE MARK INFRINGEMENT

         44.   Firefly adopts, realleges, and incorporates by reference all of the allegations

contained in all of the preceding paragraphs of this Complaint.


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         45.    Google’s acts as described above constitute intentional infringement of Firefly’s

registered marks in violation of La. R.S. 51:222.

                                             COUNT V

                                        STATE DILUTION

         46.    Firefly adopts, realleges, and incorporates by reference all of the allegations

contained in all of the preceding paragraphs of this Complaint.

         47.    Google’s acts as described above have created a likelihood of injury to Firefly’s

business reputation and/or dilution of the distinctive quality of Firefly’s marks in violation of La.

51:223.1.

                                             COUNT VI

                             STATE UNFAIR TRADE PRACTICES

         48.    Firefly adopts, realleges, and incorporates by reference all of the allegations

contained in all of the preceding paragraphs of this Complaint.

         49.    Google’s acts as described above constitute an unfair method of competition and

unfair and deceptive acts in violation of La. R.S. 51:1405.

                                          JURY DEMAND

         50.    Firefly demands a trial by jury of all issues so triable herein.

                                     PRAYER FOR RELIEF

         WHEREFORE, plaintiff, Firefly Digital, Inc., prays for judgment in its favor and against

defendant, Google, Inc., as follows:

         1.     An award of monetary damages, including recovery of Google’s profits and the

damages sustained by Firefly, arising from the acts of Google complained of herein;

         2.     An award of trebled monetary damages and recovery of Firefly’s costs and


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attorney’s fees associated with this action;

         3.     Injunctive relief against Google, its directors, officers, agents, servants,

employees, legal representatives, attorneys, successors, and assigns, and all those in active

concert or participation therewith, prohibiting them from:

         (a)    Any further use of the terms “Google Gadgets,” “Google Gadgets Editor,”

                “Google Gadget Ventures,” “Gadgets API,” “Gadget” in association with website

                development and/or customization, including widget development and promotion,

                or any other word, symbol, design, term, and mark which is a colorable imitation

                of or confusingly similar to Firefly’s marks WEBSITE GADGET and GADGET;

         (b)    Otherwise infringing Firefly’s marks WEBSITE GADGET and GADGET;

         (c)    Falsely designating the origin of and falsely describing and representing Google’s

                business, goods and services as originating from, or being related to, affiliated

                with, or sponsored or approved by Firefly; and from engaging in conduct tending

                to create such false designations, descriptions, and representations; and from any

                other conduct which tends to associate Google with Firefly in any way or pass off

                Google’s business, goods and services as those of Firefly; and

         (d)    Engaging in unfair competition with Firefly, diluting the distinctiveness of

                Firefly’s marks WEBSITE GADGET and GADGET, and injuring Firefly’s

                business reputation in any manner.

         4.    Such additional or alternative relief, at law or in equity, which the Court may deem

to be just and proper.




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                                    Respectfully submitted,


                                    /s/ Robert L. Waddell
                                    ROBERT L. WADDELL (#23586) T.A.
                                    BLAIR B. SUIRE (#32708)
                                    Jones. Walker, Waechter, Poitevent,
                                       Carrère & Denègre, LLP
                                    600 Jefferson Street, Suite 1600
                                    Lafayette, Louisiana 70501
                                    Telephone:     (337) 262-9000
                                    Facsimile:     (337) 262-9001

                                    Attorneys for Plaintiff,
                                    Firefly Digital, Inc.




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